Difference between Trademark and Copyright
Two of the most frequently confused intellectual property rights are trademarks and copyrights.While they have both been created with a protective purpose, they are substantially different in the way they are used, in the way they function and in their essential ratio juris.
We are going to explain what is a Trademark and Copyright to clarify their differences.
What is a Copyright?
As provided by Law 9.610/98 or Law 9.610, of February 1998 in Brazil and law No. 11.723 of September 28, 1933 in Argentina, copyright protects the rights of authors on their “original works of authorship”, that is, their intellectual work. This can consist in literary, artistic, dramatic, scientific, cinematographic and audiovisual works. Software too is considered worth of protection by copyright legislation, both in Brazil and in Argentina.
Copyright gives the author exclusive moral and economic rights: the right to claim authorship of the work, to sell it, publish it, to reproduce it, display it and make derivative works of it. Economic protection is granted for 70 years after the death of the author, while moral protection never expires.
What is a Trademark?
Under Brazilian law, a trademark is a distinctive sign that can be represented graphically, or in other words, that is visually perceptible. On the contrary, the Argentine law makes use of a broader definition of trademark, not requiring the requisite of visual perception and admitting, for instance, scent marks. Trademarks are signs with a peculiar, distinctive character that identify and distinguish those particular goods and services and it is used to indicate the source of the goods and to distinguish them from other producers or competitors.
Ratio of trademarks and copyrights
It is easy to see that the reason for having trademarks is essentially different from the one for copyrights.
A trademark is an easy, immediate way to identify a product or a producer. A well-known mark like Coca-Cola®, Walt Disney® or Gucci® has an intrinsic value because it is immediately recognizable by customers and has an incredibly strong economic value per se. Sometimes, the mark becomes even more important than the product: two companies may sell products, which are qualitatively identical, and just differ for the mark. Therefore, the trademarks are both a mean of protecting companies’ commercial interests and consumers’ interests: consumers are protected from confusion in the marketplace through an identifiable mark. Companies are protected from any competitor making use of a mark, which is identical or too similar and therefore may be misleading.
On the other hand, copyright protects a work from unauthorized reproduction but it doesn’t prevent someone else from taking some of the ideas expressed in the work and republishing them in their own words.
Copyrights are acquired as soon as the work has been created, without the need for registration, although the registration ensures legal certainty about the authorship, which would be difficult to prove otherwise. Trademarks have to be registered, although, both in Brazil and Argentina, some degree of protection is granted to de facto marks, especially when opposing third party registrations.
Trademark and Copyright can also coexist
Trademark and Copyright can also coexist: for instance, the Walt Disney® trademark identifies his animated movies and has become widely recognizable; at the same time, the movie itself, be it “Snow White” or “Cinderella” and the drawings that form it are protected by copyright, so any unauthorized reproduction of it is forbidden.Read More
By Moeller IP Advisors
Trade Dress protection is a phenomenon relatively new to the South American legal panorama.
The concept of trade dress includes all the visual elements used to promote a specific service or product: the packaging, its shape, the color schemes, the interior design of a shop or even its architectural structure. In Argentina, comprehensive trade dress protection is not provided by Trademark Law: while no mention is made in the law to the concept of trade dress itself, section 1 of the law 22.362 admits the protection via trademark of packages. However, section 2 letter c of the same law, expressly excludes the form of a product from being trademarked.
The Argentine Case Law on Trade Dress
Argentine Courts, however, acting very much in line with other South American Courts, have deemed the form of the product as worth of legal protection and extended de facto the trademarkability of trade dress.
In 2006, in a case that has become pivotal for trademark law, Pfizer Inc. brought a lawsuit against the Argentine company Microsules y Bernabó SA, on the basis that one of the Microsules’ product was too similar in shape and color to their own product, the well-known erectile dysfunction pill branded Viagra. Microsules objected that Argentine trademark law did not consider the shape of products and their unique colours as trademarks. In a very innovative and groundbreaking decision, the Federal Court of Appeals on Civil and Commercial matters ruled in favour of Pfizer, stating that the particular combination of a shape and colour used for the Viagra pill was original and worthy of protection. Furthermore, the court established that Microsules had practised unfair competitive behaviour by marketing a medicine with the same therapeutic effect with the same shape and colour.
How to register a Trade Dress
Provided that it complies with the requirements established by the law or the case law, any trade dress can be registered as a trademark at the INPI Argentina. It takes approximately 18 months to obtain a trademark registration if no parties oppose the application. The trademark protection lasts for 10 years from the granting date.
The application can be filed online, via the official website of INPI; in person at the offices of INPI or through mail by sending all the necessary documents to INPI. After the application, INPI performs a formal examination of the application and documents submitted; the Trademark application is then published in the Official Gazette. After publication, there are 30 calendar days for third parties to oppose the trademark application on the basis of an infringement of their own rights.
Alternative trade dress protection modalities
Alternatively, the trade dress can be protected as an industrial model if it fits the requirements set by Decree 6673/63. An industrial model is a three-dimensional shape of an object and can be registered if novel, original and if it provides an ornamental character for the product. The protection lasts for five years from the date of filing, renewable for two additional terms of five years. Although it lasts less, the protection given to industrial models is somehow stronger: while the trademark owner can oppose registration only in the same or in a related class, the industrial model owner can prevent others from exploiting the design, no matter which sector they operate in.Read More
Software development constitutes a growing part of Latin-American countries GDP. According to ABES, the Associação Brasileira das Empresas de Software, only in Brazil, the software market amounted to 19.4 billion euros in 2013, ranking before China and India. How did the legal framework adapt to this technological shift?
Protection of software in Brazil and Argentina
Although computer software are not patentable neither in the Brazilian nor in the Argentine legal system, they enjoy a substantial protection through copyright laws in both countries. In Argentina, under Decree 165/1994 and law 11723/33 software is protected for 70 years after the author’s death, while Brazil Law 9609/98 grants 50 years of protection from January 1st of the subsequent year of the software’s publication or creation.
It is not mandatory, in Brazil, to register a software in order to obtain copyright protection: the rights are gained with the creation of the work and authorship could be proved in several ways for instance, by demonstrating that the software had been published already. One should be aware that Argentinian law demands the registration of every published work in order for the author to enjoy his patrimonial rights entirely. If the register is not done, the author will have suspended his patrimonial rights until the registration – Articles 62 and 63 Law 11.723. However, registration is the safest way because it creates a strong presumption of authorship and, therefore, ownership of the software. The competent authority for registering computer programs in Brazil is the INPI, while in Argentina is the Chamber of Software and IT Services Companies.
Registering a software grants the owner a substantial legal protection under civil and criminal law. In 1998, a Rio de Janeiro court delivered the first judicial decision under the new software law and found a Brazilian advertising agency guilty of utilizing pirated software, including programs by Adobe, Microsoft, and Symantec. The court ordered the agency to pay damages of $65 million, the equivalent to 500 times the value of the illegal software. On the other hand, it is true that litigation in the software protection area tends to be limited – as complex software cases tend to be settled between the parties to avoid costly and long trials: once more, however, the registration grants a strong ownership presumption, avoiding the necessity of proving authorship otherwise.
Another argument to consider when registering a software is that piracy is still a relevant issue in Latin America: in 1998 Latin American software piracy resulted in a loss of $1,045,500,000 to international software manufacturers. This is a particularly relevant issue for Brazil, where more than 77% of the software commercialized within the country has been imported from abroad. Registration will not rule out the possibility of piracy but it is a necessary first step when entering this panorama.
Finally, copyright registration provides protection and increases the software’s value in case the author decides to license it to other parties. Registration can be used as an evidence against a licensee who does not comply with the licensing agreement or who uses the work without permission.
You write a blog post, you are ready to publish it and you just need a picture to go with it: nothing is better than a quick google search and voilà, the right image is found. As easy as it is, someone’s IP rights might have been infringed. It is quite common for small and big companies to light-mindedly use copyrighted images on their blog and websites as they are free and easy to source. However, this could end up being ultimately costly if the legitimate IP holder realizes it.
What is copyright?
Copyright protects the creator of an original work – both under the moral and economic aspect. Contrary to common belief, copyright is granted as soon as the work is created, or in our case, as soon as the image is taken. A subsequent registration is not necessary per se, but it is needed in order to prove easily who the copyright holder is and when the image was created. Images can be registered at the National Directorate for Copyright in Argentina, at the School of Arts of the Federal University of Rio de Janeiro in Brazil.
Copyright infringement, that is, publishing the images without the author’s express consent, is relatively easy to discover on the internet through a reverse image search. The majority of copyright infringement cases online are settled with a cease-and-desist letter. Shall the matter be pursued further, Civil Courts have competence over copyright infringement cases both in Brazil and Argentina. It is important to note that the violation of copyright may infringe both the economic and the moral rights of the author, for instance, because the image has been modified in a way to be detrimental to the reputation of the copyright holder.
Moreover, we must note that in both jurisdictions, copyright infringement is also a crime.
What images can be used legally?
Taking photos personally is clearly the safest way to go. Hiring a professional photographer is another option. In that case, the photographer would be the copyright owner, so it is advisable to draft an agreement establishing the transfer of the economic rights, or simply a license that allows the use and adaptation of the images on your website
As an alternative, there are several online repositories of images that are available to be legally downloaded, used and sometimes modified after the payment of a relatively cheap license. In this case, the owner of the rights simply grants you a non-exclusive license to use and amend the images. However, this means that other users will have the right to use the same photo. Some repositories license good quality images for free.
As third option, you are allowed to use images, which have been released under a Creative Commons license that allows commercial use. Creative Commons images can be freely used and, in some cases, modified (unless it’s a no-deriv license), as long as the original author is credited. The ratio is that the author gives up his economic rights on the image, in return for more exposure – as the image is likely to be shared more often.
Usually, public domains images are the ones for which the economic IP rights are expired – in Brazil, this happens after 70 years from the author’s death. In Argentina, the photographs enter to the public domain after 20 years from the start date of the first publication – Art 34. LAW 11723. Furthermore, in Argentina the public domain is not free. You do not receive authorization from the owner to use the photo but you need to pay the government if you want to use a photo.
Patenting an invention is the most effective way to protect the economic rights of the inventor. Patents provide the exclusive rights that allow a company to use, exploit and commercialize the invention for a certain number of years, usually 20 years. Moreover, granting an exclusive right of economic exploitation also provide an indirect incentive for making new inventions.
The relevance of patents for the economic development was already clear in Brazil in 1809, when King João VI issued a Royal Decree establishing a Patent Law, at the forefront of legal innovation.
Requirements for patentability
When can an invention be patented? Both in the Brazilian and Argentinian legal systems an invention can be patented provided that it is: novel, involves an inventive step and is capable of industrial application.
Novelty means that the invention should be new, that is, it is not part of the state of the art because it has not been disclosed before. There must be an absolute novelty, the invention must be new worldwide. However, both in Brazil and Argentina the inventor is granted a sort of a “grace period”: the invention can still be patented even if it was made public within 12 months prior to the date of the application.
The second requirement is the inventive step: an invention involves an inventive step when it doesn’t derive from the state of the art, in other words, is not obvious to someone of ordinary skilled in the relevant area.
The third requirement is the one of industrial applicability: the invention can be patented if it can have industrial application. Inventions which are merely theoretical cannot be patented even if they are novel and inventive.
Under art.10 of Brazilian Patent law, a series of activities are not considered inventions: among these are discoveries, scientific theories and mathematical methods, abstract concepts, literary works, computer programs, rules for games, methods of treatment applied to the human or animal body and natural living beings and biological materials found in nature. A similar list of exclusions is provided by Argentine Patent Law, which denies patentability to discoveries, raw materials preexisting in nature, plants, animals, literary works, scientific theories, mathematical methods and methods of treatment applied to the human or animal body. While neither system considers software as patentable, it is assumed that this exclusion does not stretch to include combinational claims with hardware: for instance, if the software is used to control a machine, a patent can still be issued for the machine.
Furthermore, Brazilian IP law forbids the patentability of inventions contrary to morality, decency or public safety, order and public health, and of substances resulting from the transformation of the atomic nucleus and of living beings with the exception of transgenic microorganisms if they possess the requirements of novelty, inventiveness and industrial application. Similarly, Argentina IP law rejects patents against public policy, morality, good health or life of human beings or animals, vegetable preservation, or patents that might cause serious damages to the environment.
It is interesting to note that, before the new Patent law came into force in 1997, it was not possible to patent pharmaceuticals in Brazil. Similarly, in Argentina, the INPI began issuing pharmaceutical patents for the first time in 2000, after the new Patent Law was issued in 1995.
You may have set up a Google alert and have been alerted that a product very similar to the one you patented hit the web; you may have been notified of the infringement by your legal department, or you may have just, randomly, stumbled upon it. In all the cases, you suspect your patent has been infringed. So, what are the next steps?
First step: Cease and desist letter
While it is not compulsory – neither under Brazilian law nor under Argentinian law – to send a cease and desist letter in order to commence the proceedings, this is the most common route. Sometimes a cease and desist letter is enough to convince the infringer to withdraw the infringing product and reach an extrajudicial settlement.
Time for a legal action
Shall the letter fail, the next step is a legal action filed by an attorney. In Brazil, a patent infringement constitutes both a tort and a criminal conduct. Patent infringement actions, for both civil and criminal proceedings, are filed before state courts. With the exception of some states, like Rio de Janeiro or São Paulo, there are no specialized courts for industrial property matters. In Argentina, under Patent Law No 24,481/96, the patent owner is entitled to both civil and criminal actions, filed before the Federal Courts. The claim must be substantiated in the specifications and define precisely the subject matter that is the object of the protection. It can be integrated with drawings.
Preliminary injunction: a timely safeguard against infringements.
Before the civil trial is concluded, the judge can grant a preliminary injunction: this means that the defendant will not be permitted to sell the infringing goods until the proceedings are terminated. According to Sec. 209 of the Brazilian IP Law, an injunction is granted if two elements recur: the fumus boni juris, meaning that there is a good chance that the defendant is infringing the plaintiff’s right; and the periculum in mora, meaning that there is the risk of imminent and irreparable harm to the rights of the plaintiff. In Argentina, the requirements are similar but stricter: the plaintiff must prove there is a reasonable likelihood that the patent, should its validity be challenged, shall be declared valid. An expert must be appointed by the judge and the preliminary injunction is not usually granted inaudita altera parte, unless there is a significant risk of evidence being destroyed. The court also evaluates, before granting an injunction, the harm caused to the plaintiff’s right and the potential harm that the alleged infringer may suffer in case the measure is granted by mistake. A patent infringement action before Argentina Courts of First Instance can take between three and five years, while Brazil between two and three years. In many cases the injunction is the only way you can effectively protect your rights before a judicial decision.
What are the remedies?
Finally, if the civil proceedings terminated with a decision which is favourable to you, as the patent owner, the Court would order the cessation of the infringement, the destruction of all products involved in the infringement and the recovery of all damages and lawyers’ fees. As per the criminal proceedings, in Brazil, the infringer can be sentenced to prison up to one year or to the payment of fines. Similar remedies are provided in Argentina, where the infringer who is found liable must stop infringing the patent owner’s right and must pay for damages and lawyers’ fees. When it comes to criminal responsibility, the Argentine Patent Law provides the infringer’s imprisonment of from 6 months to 3 years and with a fine.Read More
Reducing the Backlog for Patents in Brazil: a Review of the Available Examination Acceleration Programmes
By Moeller IP Advisors
The backlog is one of the main problems that a company has to face when applying for a patent before the Brazilian Intellectual Property Office, the INPI. A patent application can take an average of seven years to be granted in Brazil.
For this reason, the INPI has established a series of special programs in order to speed up the process for some categories of patents or applicants.
What are some of the legal solutions available to companies to reduce the impact of the backlog on their applications?
ICTs Patent Program
The ICTs Patents Pilot Program started on June 22, 2017 and will last for one year or until the limit of 200 patents is reached. It provides a fast track registration – lasting, according to INPI’s forecast, from eight to ten months. The program is open to Technology and Science Institutions, the so-called “ICTs”. An ICT is defined by the law as a “body or entity of direct or indirect public administration or non-profit private legal entity legally constituted under Brazilian laws, with headquarters and forum in the Country, and which includes in its institutional mission or in its social or statutory objective, basic or applied scientific or technological research or the development of new products, services or processes(…)”.
Patent Prosecution Highway between USPTO and INPI
The program was kickstarted in January 2016 as a pilot and expected to last for 2 years. It provides that any applicant who receives a positive ruling on a patent claim from either the INPI Brazil or the USPTO can request an accelerated procedure when applying to the other office. For the moment, acceptance from the INPI Brazil has been limited to patents filed in front of the USPTO in the oil and gas industry sector.
MPE Patents Pilot Project
The second phase of MPE Patent project started in March 2017, following the INPI Resolution No. 181 of 21 February 2017. The Program provides a fast track to applicants who are legally qualified as small or micro entities in Brazil. It will last for one year or until the number of 150 requests is reached.
The Japan Patent Office – INPI Pilot Project
This pilot started on 1 April 2017, following INPI Resolution No. 184. The program is supposed to run for 2 years or until 200 requests are filed. In the framework of this project, INPI Brazil will accept applications concerning the Information Technology field, whereas the JPO will accept any PPH application, not limited to any technical field. Both offices will reserve the applications an accelerated route.
Green Patent Program
The Green Patent Program provides for a priority route for patent applications related to green technologies, such as alternative energy, transportation, energy conservation, residue management and agriculture. It has been running for four years as a pilot and because of the good results achieved – with an average decision time of 2 years, it has become a permanent program.
You’ve put all the pieces in place to make your start-up dream a reality. You have a brilliant concept, developed a solid business plan, and obtained the funding you need to get your business off the ground. After all this hard work, it would be a shame if a competitor or someone else came along and took one of your most important assets – your intellectual property – and used it for their own benefit. But if you don’t understand what intellectual property is, what intellectual property assets you have, and how to protect those assets, you could be in for a rude awakening.
Almost everything your start-up creates – an invention, proprietary information, a logo, a writing or recording – can be classified as intellectual property (“IP”). IP owners have legally protectible rights in the works they create, and others can be prevented from infringing on those rights. But protecting your company’s rights in its IP does not happen automatically. Many entrepreneurs can be so focused on building their business that they fail to take crucial steps to secure their valuable intellectual property. Often, this is due to a lack of understanding of what IP is and how it works.
Here are five basic things about intellectual property that every entrepreneur should know:
1. Know What You’re Talking About. There are four main types of intellectual property, each of which applies to a different kind of asset and comes with its own set of rules and structures for protecting the owner’s rights:
- Trademarks: A trademark is a word, symbol, or phrase – such as a logo, company or product name, or slogan – that is used to identify and distinguish your business, goods, or services in the marketplace.
- Copyrights: A copyright is the ownership interest you have in a creative work fixed in a physical medium, such as writing, photos, artwork, computer code, or website content.
- Patents: Patents cover “inventions,” such as a new and novel product, method, process, or mechanical innovation.
- Trade secrets. A slightly different kind of IP, trade secrets are comprised of any type of confidential information that gives your start-up an advantage over your competition. This can include customer information and lists or special formulas or business processes that are unavailable to others.
2. Know Why Your IP is Important. According to the S. Department of Commerce, IP-intensive industries support at least 45 million U.S. jobs and contribute more than $6 trillion dollars (38.2% of the total) to the U.S. gross domestic product. For your start-up, your IP are assets that can be reflected on your books, can be key to obtaining financing, and can generate revenue through licensing and other methods.
3. Know What You Have. It is important for a start-up to do an inventory of all of its intellectual property assets. This can be tricky depending on who actually created the work. If an employee developed the work in the course of his or her employment, the rights in that work will automatically be the company’s. But if you hire an outside independent contractor to, say, design a logo or write content for you, you need to make sure that you have an agreement that the contractor is creating a “work for hire” and that they assign all rights in the work to your company.
4. Know How to Avoid Trouble. You would never intentionally infringe on someone else’s intellectual property rights, of course. Often, start-ups find themselves on the receiving end of an infringement claim because they failed to do the research up front to determine whether their proposed name, logo, or invention will run afoul of another company’s existing rights. Imagine that you’ve invested thousands of dollars and hours building consumer knowledge of your brand only to discover that your logo is substantially similar to a logo another company has been using for years. Not only may you lose your rights to use your logo, you will have to spend significant sums defending yourself from infringement claims and may even have to pay damages to the aggrieved party. This is why it is so important to first invest in due diligence, such as a complete trademark search, before proceeding.
5. Know How to Protect What You Have. Intellectual property rights are protected by a combination of federal and state (and international) law. These laws can be powerful weapons your company can use to stop others from infringing on your rights as well as to recover damages from infringers. However, the ability to use those laws often requires registering your intellectual property with the appropriate authorities, such as the U.S. Patent and Trademark Office or the U.S. Copyright Office. This can be a complicated process. There are very specific requirements for registration, and both the government as well as others can object to and challenge your right to registration. Hiring an experienced intellectual property lawyer to assist you with registering your IP or taking legal action against infringers is one of the best investments your young company can make when it comes to protecting these crucial business assets.Read More